Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Status of Claims
The following is a FIRST, NON-FINAL OFFICE ACTION for Application #19/093,083, filed on 03/27/2025, and a Preliminary Amendment filed on 07/21/2025. This application is a Continuation of Application #17/683,143, filed on 02/28/2022.
Claims 1-20 are pending and have been examined.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The rationale for this finding is explained below.
Per Step 1 of the analysis, the claims are analyzed to determine if they are directed to statutory subject matter. Claim 1 claims a method, or process. A process is a statutory category for patentability. Claim 10 claims a non-transitory computer-readable media. Therefore, the claim is interpreted as an article of manufacture. AN article of manufacture is a statutory category for patentability. Further, the claim is in conformity with the Kappos Memorandum of 2010 as it includes the phrase “non-transitory.” Claim 15 claims a system comprising a processor and a memory. Therefore, the system is interpreted as an apparatus. An apparatus is a statutory category for patentability.
Per Step 2A, Prong 1 of the analysis, the examiner must now determine if the claims recite an abstract idea or eligible subject matter. In the instant case, the independent claims are directed towards an abstract idea. Specifically, independent claims 1, 10, and 15 recite “removing data associated with the agreement document, determining, based on the mapping of the document object to the condition in the document model, whether the document object value stored in the document object satisfies the condition.” Therefore, the claims recite an abstract idea, namely “certain methods of organizing human activity.” Specifically, the claims recite “commercial or legal interactions including agreements in the form of contracts.” The claims describe analysis and determination of an agreement document and determining if the agreement and the incoming information satisfies the condition information. The claims facilitate the drafting and execution of a legal agreement document. The claims simply automate these steps using a computer. Therefore, the claims recite an abstract idea, namely “commercial or legal interactions including agreements in the form of contracts.”
Per Step 2A, Prong 2 of the analysis, the examiner must now determine if the claims integrate the abstract idea into a practical application. The additional elements of the independent claims include “a storage device,” “a processor,” and a “memory.” However, these additional elements are considered generic recitations of a technical element and are recited at a high level of generality. These additional elements are being used as “tools to automate the abstract idea” (see MPEP 2106.05 (f)) and are not recitations of a special purpose computer or transformation (see MPEP 2106.05 (b) and (c)). Therefore, these additional elements are not considered to integrate the abstract idea into a practical application. The claims also include “storing a document object value to a document object of a document model associated with an agreement document, the document model including a mapping of the document object to a condition.” This additional element, absent further details, is considered “storing and retrieving information in a memory,” which is a generic recitation of a technical element and is listed in the MPEP 2106.05 (d) (II) (iv) as an example of conventional computer functioning- see Versata Dev Grp v SAP and OIP Techs v Amazon.com. Therefore, these additional elements are not considered to integrate the abstract idea into a practical application.
Per Step 2B of the analysis, the examiner must now determine if the claims include limitations that are “significantly more” than the abstract idea by demonstrating an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The additional elements of the independent claims include “a storage device,” “a processor,” and a “memory.” However, these additional elements are considered generic recitations of a technical element and are recited at a high level of generality. These additional elements are being used as “tools to automate the abstract idea” (see MPEP 2106.05 (f)) and are not recitations of a special purpose computer or transformation (see MPEP 2106.05 (b) and (c)). Therefore, these additional elements are not considered significantly more than the abstract idea itself. The claims also include “storing a document object value to a document object of a document model associated with an agreement document, the document model including a mapping of the document object to a condition.” This additional element, absent further details, is considered “storing and retrieving information in a memory,” which is a generic recitation of a technical element and is listed in the MPEP 2106.05 (d) (II) (iv) as an example of conventional computer functioning- see Versata Dev Grp v SAP and OIP Techs v Amazon.com. Therefore, these additional elements are not considered significantly more than the abstract idea itself.
When considered as an ordered combination, the claim is still considered to be directed to an abstract idea as the claim steps in the ordered combination simply recite the logical steps for storing and analyzing the document object value of the document object of a document model, removing data associated with the agreement from the device, and determining based on the mapping whether the document object value satisfies the condition. Therefore, the ordered combination does not lead to a determination of significantly more.
When considering the dependent claims, claims is considered part of the abstract idea. Claim 2 is considered part of the abstract idea, as simply describing what the condition data is does not change the analysis. Claim 3 is considered part of the abstract idea as there is no technology recited. Claim 4 is considered part of the abstract idea, as the generating steps are part of a facilitation of agreement in the form of contracts in a legal setting. The outputting of the data on a GUI is considered “receiving and/or transmittal of data over a network,” cited in the MPEP 2106.05 (d) (II) (i-ii) as an example of conventional computer functioning- see Symantec, TLI Communications, and buySAFE v Google. Claims 5 and 6 are considered part of the abstract idea, as facilitating signatures on an agreement and validating condition satisfaction is considered part of facilitating agreement in the form of contracts as a legal process. The outputting of data on a GUI is considered “receiving and/or transmittal of data over a network,” cited in the MPEP 2106.05 (d) (II) (i-ii) as an example of conventional computer functioning- see Symantec, TLI Communications, and buySAFE v Google. Claims 7 and 8 are considered part of the abstract idea. Claim 9 is considered part of the abstract idea. The “document object value represented as a text string and absent corresponding metadata” and “generating a data structure” is considered conventional computer functioning and the examiner takes Official Notice that it is old and well known in the computer arts to have a “document object value represented as a text string and absent corresponding metadata” and “generate a data structure.” The other dependent claims mirror those already discussed above.
Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. Vs. CLS Bank International et al., 2014 (please reference link to updated publicly available Alice memo at http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf as well as the USPTO January 2019 Updated Patent Eligibility Guidance.)
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 8-12, and 15-17 are rejected under 35 USC 102 (a) (2) as being anticipated by Jansz, Pre-Grant Publication No. 2023/0214424 A1.
Regarding Claims 1, 10, and 15, Jansz teaches:
A method (media) (system)… comprising:
storing a document object value to a document object of a document model associated with an agreement document (see Figures 1-2, [0028]-[0029], [0034]-[0037], [0054]-[0064] in which document object values associated with a document object of a document model are stored), the document model including a mapping of the document object to a condition (see [0036], [0073], [0076]-[0078], and [0086] in which the document model includes mapping of document objects to conditions; see also [0027], [0029], [0037]-[0038], [0061], [0077], [0086], and [0091]-[0092] which teach a mapping of document objects to conditions)
based on the storing, removing data associated with the agreement document from a storage device (see Figures 1-2, [0028]-[0029], [0034]-[0037], [0054]-[0064], and [0086]-[0092])
determining, based on the mapping of the document object to the condition in the
document model, whether the document object value stored in the document object satisfies the condition (see [0027], [0029], [0037]-[0038], [0061], [0077], [0086], and [0091]-[0092] which teach a mapping of document objects to conditions to determine if the value satisfies the condition)
Regarding Claims 2, 11, and 16, Jansz teaches:
the method of claim 1…
wherein the condition indicates a consideration characteristic of the agreement document and the document object value includes an indication whether a party associated with the agreement document satisfies the consideration characteristic (see [0034]-[0038]; see also [0061], [0090]-[0092] in which the consideration characteristic is satisfied)
Regarding Claims 3, 12, and 17, Jansz teaches:
the method of claim 1…
receiving a query indicating the condition and outputting, based on the query, a determination of whether the document object value stored in the document object satisfies the condition (see [0029], [0034]-[0039], [0077]-[0079], and [0086]-[0092] in which the consideration characteristic is determined to be satisfied when the stored document object and model are queried)
Regarding Claim 8, Jansz teaches:
the method of claim 1
accessing a template associated with an agreement type corresponding to the document model, the template including a variable for the document object (see [0034]-[0039], [0055]-[0056], [0063]-[0065], [0079]-[0080], and [0100])
generating the agreement document by at least assigning the document object value of the document object to the variable of the template (see [0034]-[0039], [0055]-[0056], [0063]-[0065], [0079]-[0080], and [0100])
Regarding Claim 9, Jansz teaches:
the method of claim 1
wherein storing the document object value from the agreement document to the document object of the document model comprises:
receiving a document, the document including the document object and the document object value, the document object value represented as a text string and absent corresponding metadata, identifying the document as corresponding to the agreement document, identifying the document object value of the document object within the document using the agreement document (see [0027]-[0028], [0072], [0079], and [0082]-[0090])
generating a data structure comprising a mapping between the document object value and the document object, wherein the document model further comprises the data structure (see [0034]-[0036] and [0062]-[0064])
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4-7, 13-14, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jansz, Pre-Grant Publication No. 2023/0214424 A1 in view of Voltz, et al., Pre-Grant Publication No. 2023/0016689 A1.
Regarding Claim 4, Jansz teaches:
the method of claim 3
wherein outputting the determination comprises:
wherein the determination of whether the document object value stored in the document object satisfies the condition comprises an indication that the document object satisfies the condition (see [0029], [0076]-[0078], and [0091]-[0092])
generating the agreement document using the document model (see [0034]-[0036], [0054]-[0059], and [0064]-[0067])
Jansz, however, does not appear to specify:
generating, based on the query, data for a graphical user interface to include the generated agreement document in conjunction with the indication that the document object satisfies the condition outputting the data for the graphical user interface
Voltz teaches:
generating, based on the query, data for a graphical user interface to include the generated agreement document in conjunction with the indication that the document object satisfies the condition outputting the data for the graphical user interface (see Figures 2A and 5B, [0046]-[0049], [0054]-[0057], and [0109]-[0110])
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Voltz with Jansz because Jansz already teaches determining satisfaction of a condition and facilitating signing of the agreement, and generating a GUI to display the agreement and associated data would allow for full access and interaction by users and easy facilitation of the various aspects of the agreement.
Regarding Claims 5, 13, and 18, Jansz teaches:
the method of claim 1…
Jansz, however, does not appear to specify:
receiving a request to electronically sign the agreement document
based on determining the document object value does not satisfy the condition:
denying the request to electronically sign the agreement document outputting an indication of the condition of the object requirement that is not satisfied by the document object value included in the document object
Voltz teaches:
receiving a request to electronically sign the agreement document (see Figures 2A and 5B, [0046]-[0049], [0054]-[0059], and [0109]-[0110])
based on determining the document object value does not satisfy the condition:
denying the request to electronically sign the agreement document outputting an indication of the condition of the object requirement that is not satisfied by the document object value included in the document object (see [0034]-[0036] and [0050]-[0052]; the examiner notes that while the citations do not explicitly say the request is “denied,” the request is only approved if the conditions requirements are met)
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Voltz with Jansz because Jansz already teaches determining satisfaction of a condition and facilitating signing of the agreement, and generating a GUI to display the agreement and associated data would allow for full access and interaction by users and easy facilitation of the various aspects of the agreement.
Regarding Claims 6, 14, and 19, Jansz teaches:
the method of claim 1…
based on determining the document object value satisfies the condition:
generating, based on the document model, the agreement document (see [0034]-[0036], [0054]-[0059], [0064]-[0067])
Jansz, however, does not appear to specify:
outputting the agreement document via a signing interface configured to enable a signing entity to electronically sign the agreement document
determining that the signing entity has provided an electronic signature to electronically sign the agreement document
modifying the document model to include the electronic signature
Voltz teaches:
outputting the agreement document via a signing interface configured to enable a signing entity to electronically sign the agreement document (see Figures 2A and 5B, [0046]-[0049], [0054]-[0059], [0065]-[0066], and [0109]-[0110])
determining that the signing entity has provided an electronic signature to electronically sign the agreement document (see Figures 2A and 5B, [0046]-[0049], [0054]-[0059], and [0109]-[0110])
modifying the document model to include the electronic signature (see [0065]-[0066])
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Voltz with Jansz because Jansz already teaches determining satisfaction of a condition and facilitating signing of the agreement, and facilitating signing and modifying the document would allow for ratification of the agreement document and verified finality and storage.
Regarding Claims 7 and 20, the combination of Jansz and Voltz teaches:
the method of claim 6…
Jantz further teaches:
wherein generating the agreement document comprises
storing the agreement document at a storage (see [0063], [0073], [0105], [0109]-[0111], and [0117]-[0120]
deleting the agreement document from the storage (see at least [0081])
Voltz further teaches:
wherein the method further comprises:
based on determining that the document model has been modified to include the electronic signature (see [0065]-[0066])
It would have been obvious to one of ordinary skill in the art at the time of the filing of the application to combine Voltz with Jansz because Jansz already teaches determining satisfaction of a condition and facilitating signing of the agreement, and facilitating signing and modifying the document would allow for ratification of the agreement document and verified finality and storage.
Conclusion
The following prior art references were not relied upon in this office action but are considered pertinent to this application:
Yoshioka, et al., Pre-Grant Publication No. 2007/0050713 A1- teaches digital document management program and interface including generation of contracts and agreement documents, verification of conditions, signing of contracts digitally, etc.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Luis A. Brown whose telephone number is 571.270.1394. The Examiner can normally be reached on Monday-Friday 8:30am-5:00pm EST. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, JESSICA LEMIEUX can be reached at 571.270.3445.
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/LUIS A BROWN/Primary Examiner, Art Unit 3626